WIPO Arbitration and Mediation Center


Hall & Wilcox Lawyers v. Mookstar Media Pty Ltd, ACN 038 167 293

Case No. DAU2014-0040

1. The Parties

The Complainant is Hall & Wilcox Lawyers of Melbourne, Victoria, Australia, represented internally.

The Respondent is Mookstar Media Pty Ltd, ACN 038 167 293 of Glenside, South Australia, Australia represented by Cooper Mills Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <hw.com.au> is registered with Drop.com.au Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2014. On December 24, 2014, the Center transmitted by email to Drop.com.au Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 7, 2015, Drop.com.au Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015. The Response was filed with the Center on January 27, 2015.

The Center appointed Panelists William P. Knight, Warwick A. Rothnie and John Swinson as panelists in this matter on February 26, 2015. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a law firm headquartered in Melbourne, Australia and with offices in Sydney. According to the Complaint, it was founded in 1917 and has 300 partners and employees. Its annual turnover exceeds AUD 60,000,000. It has won a number of awards or accolades over the last few years including Best Law Firm (revenue under AUD50 million) at the Business Review Weekly (“BRW”) 2009 Client Choice Awards; Law Firm of the Year, Law Institute of Victoria President’s Awards 2012; and Best Professional Services Firm to the Finance and Insurance sector at the BRW 2013 Client Choice Awards. It has also been a Finalist in the Best Law Firm category in a number of years.

As is commonly done, the partners in the Complainant own the shares in a service company, Francis Gillman Pty Ltd (“FG”). FG owns a trade mark registered in Australia, TM No. 991915, HALL & WILCOX, for goods in International Class 16, education and training services in International Class 41, and the provision of legal services in International Class 42. It licenses that trade mark to the Complainant. Contrary to the contentions in the Response, these arrangements have been verified by a statutory declaration made by the Complainant’s managing partner.

The Respondent became the registrant of the disputed domain name on or about February 15, 2014. Until that date, it had been held from March 23, 2010 by DNS Advertising Pty Ltd (“DNS”). The sole director and sole shareholder of both companies appear to be the same person, Mr. Wade Davidson.

DNS is currently under external administration. It has been the subject of press reports stating that it has made a business of buying up domain names which consist of acronyms. At least one of those domain names was ordered to be transferred under the Policy to a law firm whose initials formed the domain name. There has also been a dispute with another law firm about a domain name consisting of the initials of that law firm.

In December 2013, a representative of the Complainant contacted DNS to inquire about acquiring the disputed domain name. That led to the Complainant making an offer to buy the disputed domain name for AUD 5,000. That was rejected with an indication that the disputed domain name was worth a five figure sum.

After the Complainant’s attempt to buy the disputed domain name from DNS failed, it lodged a complaint with .au Domain Administration Ltd (“auDA”) on December 23, 2014, challenging the registration of the disputed domain name under auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2TLDs. auDA notified the Complainant that its complaint had been unsuccessful in February 2014.

Prior to January 25, 2014, the disputed domain name resolved to a webpage which simply displayed the acronym “HW”, two blocks or bricks and a link to “Contact us”. Since that date, the disputed domain name has resolved to a website for “HW Consulting” which claims to be a boutique online consulting firm.

According to the Response, a Mr. Huang Vo and Mr. Davidson provide paid search consulting services under the name “HW Consulting” and operate email accounts using the disputed domain name. The name “HW Consulting” is not registered as a business name. The Response does not include evidence of business communications by HW Consulting or emails with addresses using the disputed domain name. The Response does include a company extract for Boost Digital Pty Ltd, which is the corporate entity through which the Respondent claims the consulting business was being carried on. Messrs Vo and Davidson are directors. It also includes a court index extract confirming that Boost Digital Pty Ltd initiated court proceedings against a party which, according to the Response, was a significant client of the business.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with or confusingly similar to, a trade mark in which the Complainant has rights. Such right may be rights as a licensee; see auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview 1.0”), paragraph 1.8.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trade mark.

The Complainant has established that it is a licensee of the registered trade mark HALL & WILCOX identified in section 4 above. It also claims common law rights in that name as well.

The Panel accepts that the disputed domain name can be seen as the initials of that trade mark plus the second level domain identifier “.com.au”. However, the initials “HW” can be the initials of any number of different people and serve as the acronym for quite a number of different things and activities. Indeed, the first registrant of the disputed domain name, prior to DNS, was a company called “Hunter Wholesale Confectioners Pty Limited”. Accordingly, the Panel is not prepared to find that the disputed domain name is confusingly similar to the Complainant’s trade mark HALL & WILCOX.

The Complainant also claims it has trade mark rights in HW. Neither the Complainant nor FG profess to have a registered trade mark for HW. The Complainant relies instead on evidence that it uses a logo incorporating the letters “HW” and that it refers to itself in publications as “HW”. The logo appears on the Complainant’s website, its letterhead, the business cards of its partners and employees and in advertisements and announcements published by the Complainant. It is not clear when the Complainant started using this logo form.

The logo is highly stylized. It can be seen as “HW”. It can also be seen as a number of other possible letter combinations. It may also be seen as an abstract image.

In addition, the examples of the logo in evidence all show the logo being used with, and in close proximity to, the Complainant’s name, appearing underneath the device or to the side. In many instances, such as on the Complainant’s website, the Complainant’s name is represented in lettering as large as the device.

However, the evidence in the Complaint that the Complainant refers to itself as “HW” is very modest and there is no evidence at all that anyone else refers to the Complainant as “HW”. That is understandable as “HW” is not distinctive by itself. Indeed, the Response includes evidence that there are some 26 registered or pending trade mark applications on the Australian Register of Trade Marks for, or based on, “HW”. No doubt there are many other businesses and consumers who use, or could wish to use, the two letter combination without misrepresenting any association with the Complainant.

In these circumstances, the Panel considers that the Complainant has not proven rights in “HW” alone. Given the highly stylized nature of the device element in the Complainant’s logo and its consistent use with the Complainant’s name in that logo, the Panel is not prepared to find that the disputed domain name is confusingly similar to the Complainant’s logo.

Therefore, the Complainant has failed to establish the first requirement under the Policy.

B. Rights or Legitimate Interests and Registered or Subsequently Used in Bad Faith

Given the Complainant has not made out the first requirement under the Policy, the Complaint cannot succeed. Therefore, there is no purpose in considering the other limbs under the Policy.

6. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Presiding Panelist

William P. Knight

John Swinson
Date: March 9, 2015